Can later design registration defend infringement?

The Court of Justice of the European Union (CJEU) has given judgment on the issue as to whether a later registration can provide a defence to an infringement action in respect of a prior registration (on the basis that an RCD gives its proprietor certain 'exclusive' rights).

The RCD system involves no substantive examination by OHIM of applications and so it is not uncommon for very similar designs to be registered by different proprietors. In fact, it is not unknown for potential infringers to seek to register their 'infringing designs' in the hope of persuading a court that such a registration gives them a defence. In some countries, courts have been sympathetic to such arguments and Customs have refused to hold onto infringing goods if they are the subject of an RCD. Indeed it is not unknown for importers to apply for an RCD if their products are seized by Customs.

The CJEU has now made it plain that the later registration gives no such defence and the proprietor of the earlier registration can sue, even if the 'infringing product' is the subject of a later RCD. As with patents, a RCD gives the proprietor a right to 'exclude' others from using that registered right (assuming it to be valid) – it does not give them the unfettered “right” to use embodiments of it.

If there are two RCDs which are in conflict, it is up to the proprietor of the later registration to seek to cancel the earlier RCD (although that may not always be easy without undermining the later registration).

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